WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Saks & Company LLC v. Saksfifthavenue-boutique.org

Case No. D2015-0372

1. The Parties

Complainant is Saks & Company LLC, New York, United States of America, represented by Loeb & Loeb, LLP, United States of America.

Respondent is Saksfifthavenue-boutique.org, Bergen, Norway.

2. The Domain Name and Registrar

The disputed domain name <saksfifthavenue-boutique.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2015. On March 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 7, 2015.

The Center appointed Roberto Bianchi as the sole panelist in this matter on April 21, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The followings facts are uncontested:

Complainant is a well-known retail store chain company. Complainant opened its first store in New York City in the early 1900s. Presently, Complainant’s 42 SAKS FIFTH AVENUE stores and 80 SAKS FIFTH AVENUE OFF 5TH stores operate under and/or in connection with Complainant’s marks SAKS FIFTH AVENUE, SAKS FIFTH AVENUE OFF 5TH and SAKS. For the last fiscal year, Complainant had revenue of over USD 3 billion.

Complainant owns numerous registrations for the mark SAKS FIFTH AVENUE with the USTPO, inter alia, Reg. No. 2351428, Reg. Date May 23, 2000; covering retail department store services of international class 35; Reg. No. 1180632, Reg. Date December 1, 1981, covering retail department store services of international class 42; Reg. No. 1359451, Reg. Date September 10, 1985, covering fruit preserves, etcetera, of international class 29, cookies, breads, etcetera of international class 30, and restaurant services of international class 42; Reg. No. 1667955, Reg. Date December 10, 1991, covering beauty and hairdressing salon services of international class 42; Reg. No. 1994280, Reg. Date August 20, 1996, covering articles of wearing apparel, etcetera, of international class 25; Reg. No. 627814, Reg. Date May 29, 1956; watches and clocks of international class 27; Reg. Date 631799, Reg. Date July 31, 1956: stationery, writing paper and writings pens, etcetera, of international class 16; Reg. No. 635368, Reg. Date October 9, 1956, covering fur pelts and skins for making wearing apparel of international class 18; Reg. No. 737308, and Reg. Date September 4, 1962, covering retail department store services of international class 42.

Complainant also owns registrations for the same mark in Malaysia under Reg. No. 94002374, Reg. Date March 30, 1994, covering products of international class 25, as well as Community Trademarks such as Reg. No. 181206, Reg. Date March 28, 2001 and Reg. No. 6406466, Reg. Date July 29, 2009, both covering products and services of various international classes.

The disputed domain name was registered on July 5, 2014. The website at the disputed domain name is currently inactive.

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends as follows:

The disputed domain name is confusingly similar to Complainant’s SAKS name and registered marks. It is a blatant attempt to trade off Complainant’s well-respected SAKS FIFTH AVENUE stores. Moreover, the disputed domain name completely subsumes Saks’ famous SAKS and SAKS FIFTH AVENUE marks and domain names.

Respondent can have no rights or legitimate interest in the disputed domain name since it serves solely to divert Internet users for SAKS FIFTH AVENUE or SAKS and/or its products and services to Respondent’s website for Respondent’s profit.

Upon information and belief, Respondent is not using, and has not used, the disputed domain name in connection with any bona fide offering of goods or services. While Respondent’s website at the disputed domain name purports to offer goods for sale, based on reports by Saks customers who mistakenly encountered the website or a website believed to be related to Respondent’s website, Complainant believes that it does not actually sell goods to consumers but instead may simply collect customer information, including financial information. Moreover, even if Respondent does offer goods for sale, any sales are made through deliberate confusion and use of Complainant’s trademarks.

There is no evidence or reason to infer that Respondent is currently known, or has ever been known as “Saksfifthavenue-boutique.org” or any variation thereof. Given Complainant’s’ nearly 100 years of using its SAKS and SAKS FIFTH AVENUE marks, and the longstanding fame and distinctive nature of such marks, it would be nearly impossible for Respondent ever to claim to be “commonly known by” any derivative of such marks.

Respondent has not made any legitimate noncommercial or fair use of the disputed domain name. Respondent is using the disputed domain name to generate profits through confusion. Such a use of a domain name is not a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii).

Respondent’s lack of legitimate interest is further demonstrated by the fact that, as discussed below, its only use of the disputed domain name has been in bad faith. It has been found that “bad faith use of a domain name does not establish rights or legitimate interests in the sense of paragraph 4(a)(ii) of the Policy.” TPI Holdings, Inc. v. AFX Communications, WIPO Case No. D2000-1472.

Respondent registered and used the disputed domain name in bad faith. The facts surrounding Respondent’s registration and use of the disputed domain name all demonstrate its bad faith. Complainant has been using its marks since the early 1900s. Given their longstanding and widespread use, the SAKS and SAKS FIFTH AVENUE marks are famous. Respondent clearly and intentionally took Complainant`s SAKS FIFTH AVENUE mark and registered it as a domain name, in a brazen attempt to lure Complainant‘s customers. There can be no doubt that Respondent registered the disputed domain name with full knowledge of the SAKS and SAKS FIFTH AVENUE marks, which constitutes evidence of bad faith under the UDRP Policy. In addition, to the extent competitive links are displayed on the website at the disputed domain name, “[i]t is well-settled that registration and use of a domain name to re-direct Internet users to websites of competing organizations constitutes bad faith use and registration.” Freedom Flag, Inc. d/b/a Falls Flag & Banner Co. v. Flags Unlimited, WIPO Case No. D2002-0478.

Respondent’s use of the disputed domain name to display competitive wares, and/or trick consumers into providing their personal information without actually selling goods, potentially diverts business away from Complainant, which is a disruption and is evidence of bad faith registration and use pursuant to Policy paragraph 4(b)(iii).

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, paragraph 4(a), a complainant must make out its case that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that Complainant has trademark rights in the SAKS FIFTH AVENUE marks. See section 4 above.

The Panel notes that the disputed domain name incorporates the SAKS FIFTH AVENUE mark entirely, adding a hyphen and the generic term “boutique”, plus the Top-Level Domain (TLD) suffix “.org”. It is well established that the addition of generic terms, punctuations marks and TLDs, and the deletion of spaces, generally are inapt to distinguish a domain name from a mark. In particular, since Complainant is in the business of retail stores, the addition in the disputed domain name of the generic term “boutique” rather reinforces the association with Complainant and its marks. See Saks & Company v. new-saksfifthavenue-outlet.com, WIPO Case No. D2013-1646, relating to <new-saksfifthavenue-outlet.com> (“The Panel accepts the Complainant’s submission that the terms “new-” and “-outlet” do nothing to distinguish the Domain Name from the Complainant’s trademark, being generic or descriptive terms, the latter of which is commonly associated with discounted retail activities.”) See also Swarovski Aktiengesellschaft v. “swarovski-boutique.net swarovski-boutique.net swarovski-boutique.net”, WIPO Case No. D2014-1251, relating to <swarovski-boutique.net> (“Further, the disputed domain name cannot avoid a finding of confusing similarity with that mark by the addition of a hyphen followed by the description “boutique”.”)

For these reasons the Panel finds that the first requirement of the Policy is met.

B. Rights or Legitimate Interests

Complainant contends that Respondent can have no rights or legitimate interest in the disputed domain name since it serves solely to divert Internet users for SAKS FIFTH AVENUE or SAKS and/or its products and services to Respondent’s website for Respondent’s profit. Further, says Complainant, Respondent is not using, and has not used, the disputed domain name in connection with any bona fide offering of goods or services. Respondent’s website at the disputed domain name purports to offer goods for sale. However Complainant believes that Respondent does not actually sell goods to consumers but instead may simply collect customer information, including financial information. If Respondent does offer goods for sale, any sales are made through deliberate confusion and use of Complainant’s trademarks.

Complainant also contends that there is no evidence that Respondent is currently known, or has ever been known as “Saksfifthavenue-boutique.org” or any variation thereof. Finally, Complainant contends that Respondent has not made any legitimate noncommercial or fair use of the disputed domain name, since Respondent is using the disputed domain name to generate profits through confusion, which is not a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii).

In the Panel’s opinion these contentions, together with the existent evidence, amount to a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. It is a consensus view that a complainant is required to make out an initial prima facie case that a respondent lacks rights or legitimate interests, and that once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions.

The Panel notes that Respondent failed to submit any allegation or evidence. Complainant has shown at Exhibit E to the Complaint that on February 25, 2015, at a web page under the title “Saks Fifth Avenue”, Respondent offered on the website at the disputed domain name various goods for sale such as Louis Vuitton bags, Swaroski earrings as well as sunglasses from various makers, all of them at big discounts. Whether or not these were real offerings of authentic goods or merely a means to obtaining valuable data from the interested visitors presumably looking for Complainant remains open. In any case the Panel believes that in either case Respondent appears to be using Complainant’s mark in the disputed domain name to obtain profits from the confusion created in the public as to the source of the offering.

In the Panel’s view, neither such conduct nor the end of all activity on the website at the disputed domain name following the submission of the Complaint are evidence of rights or legitimate interests in the disputed domain name. In fact, during the lookup visit by the Center on March 17, 2015 the Center’s browser did not show any activity on the website at the disputed domain name. Also, on April 30, 2015 the Panel attempted to visit this website but its browser only returned a “Server Not Found” text. The Panel believes that the present inaction of the website does not support any finding for Respondent as to rights or legitimate interests in the disputed domain name either.

In conclusion, the Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that Complainant’s registration for the SAKS FIFTH AVENUE marks predates by many years the registration of the disputed domain name. See section 4 above.

Also, the Panel shares the view of previous UDRP panels that Complainant’s retail stores and marks are well-known or famous. See Saks & Company v. saksfifthavenue-store.com, WIPO Case No. D2013-1643, Saks & Company v. saksfifthavenue-sale.com, WIPO Case No. D2013-1644, Saks & Company v. saksfifthavenue-coupon.com, WIPO Case No. D2013-1645, and Saks & Company v. new-saksfifthavenue-outlet.com, WIPO Case No. D2013-1646 (“The Panel accepts the evidence of the Complainant that, as a result of its history and commercial activities, its mark SAKS FIFTH AVENUE is famous or well-known in the field of retail sales.”) Further, on the website at the disputed domain name Respondent has used Complainant’s device mark presumably imitating Complainant’s own websites. The Panel cannot but conclude that Respondent knew and had Complainant and Complainant’s marks in mind at the time of registering the disputed domain name. In the circumstances of this case this means that the registration of the disputed domain name was in bad faith.

In the Panel’s opinion, whether or not Respondent impersonated Complainant in operating an imitation website, it is clear that it used the domain name incorporating the SAKS FIFTH AVENUE mark in its entirety, and displaying the stylized version of Complainant’s mark (such as in Complainant`s registered U.S. trademark Reg. No. 620917) on the main web page, thus intending to extract a profit via pay-per-clicks, or by eliciting and gathering valuable personal information from Internet users led into confusion by Respondent. See AB Gustaf Kähr v. Prasanth sp, inet, WIPO Case No. D2011-1455 (“Respondent on its “www.woodloc.org” website is impersonating Complainant and trying to elicit personal information from Internet users presumably looking for Complainant and its WOODLOC mark. The purposes for this behavior were neither stated on Respondent’s website nor elsewhere explained by Respondent, but it is rather obvious that personal information obtained from Internet users is a valuable commodity in an age of marketing through massive emailing. Given the renown of Complainant’s WOODLOC mark and products, it is evident that Respondent has availed itself of this renown to elicit these data.”)

In other words, Respondent, by using the disputed domain name as shown has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).

The fact that the disputed domain name is currently inactive does not prevent a finding of bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <saksfifthavenue-boutique.org>, be transferred to the Complainant.

Roberto Bianchi
Sole Panelist
Date: May 4, 2015